IP aspects in collaborations CERN TT case studies Jean-Marie Le Goff/CERN IAEA/INPRO Dialog forum on International Collaborations on Innovation to Support Globally Sustainable Nuclear Energy Systems IAEA, Vienna November 18-21, 2014

2 Innovation forum – Germany at CERNTechnology Transfer at CERN Innovation forum – Germany at CERNTechnology Transfer at CERN Research & Discovery Training Technology & Innovation Collaboration CERN where the scientific knowledge and the technology are transferred to industry and society ©CERN

Content Context for collaboration Impact on industry Case studies at CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

R&D in the academia/industry context 4 Research: Open science Industry: In/out sourcing technology Publication of discoveries & R&D results  Scientific recognition  Value in copyrights R&D to meet scientific programme objectives  Long-term  Best possible solution within budgetary constrains R&D results: Technology  IP rights to use internally Highly collaborative  Memorandum of Understanding (MoU) Unclear IP situation  Joint ownership of R&D results  Complex dissemination Funding  Public  Quality of research program Protection of innovations & know-how  Required to facilitate industrial dissemination  Value in IP rights (patents, etc.) R&D to increase market share  Short-term  Best cost-effective solution R&D results: Products (prototypes)  IP rights to manufacture Highly competive  Licence and/or partnership agreement Clear IP situation  Clear ownership of R&D results  Dissemination based on manufacturing Financing  Private with public support (EU, National funds)  Product market potential IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

5 Procurement as a source of innovation & Technology Large fundamental research apparatus are not directly available from industry CERN’s purchasing requirements into 3 categories: Standard industrial products Standard industrial products New high-tech products requiring a conceptual design phase New high-tech products requiring a conceptual design phase  Innovation/IP vested in CERN  Innovation/IP vested in CERN Non-standard products which can be produced with existing manufacturing techniques and / or technologies Non-standard products which can be produced with existing manufacturing techniques and / or technologies  Innovation/IP vested in industry  Innovation/IP vested in industry Long and Intensive R&D and Prototyping required Source of innovation Source of innovation Source of new technologies Source of new technologies Existing technologies pushed to the limits Existing technologies pushed to the limits Creation of know-how Creation of know-how Although developed for the purpose of fundamental research, many technology developments and know-how have strong impact to society IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Particle Physics, a key driver for innovation Impact of industry-academia collaborations to boost innovation : discovery of superconductivity 1955: SC magnet manufacturing for research Status in : LHC IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Example: Impact of LHC developments on Health 7 Radiation hard, fast and high precision measurement of: Energy Momentum Time Detector & electronic technologies Solid State detectors Gaseous detectors Calorimeter Readout electronics Microstrip Pixel A-Si:H Photo detectors MWPC FGLD GEM Scintillating crystals Scintillating fibers HPD’s Pixel SiPM/SPAD Single photon counting HPTDC timing Discriminators Examples What the LHC needs Applications in Medical and Molecular Imaging: PET CT X-Ray SPECT MRI Performance High sensitivity for small tumor detection High specificity to avoid unnecessary biopsies and wrong diagnostics Ultra fast Signal Analysis High Spatial Resolution but also Compactness Low cost Mature technology Liability Flexibility in use Courtesy: H. Hillemanns/CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Content Research context IP aspects Case studies at CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

11th June 2010B. Denis9

Content  Introduction  IP generated through CERN’s scientific programme  TT through technology transfer partnerships  TT through exploitation  Incentives  Approval and arbitration  Reporting 11th June 2010B. Denis10 Definitions and general principles TT and related IP management principles Redistribution of TT revenues General rules for TT activities

TT and related IP management 11th June 2010B. Denis11 R&D in the framework of CERN’s scientific programme Collaborative R&D Contract research Service and consultancy IP identification, ownership, protection and access right IP disclosure, ownership and protection Licensing Spin-off companies Technology transfer Research & development Intellectual Property management Section #2: IP generated through CERN’s Scientific program Section #3: TT through TT partnerships Section #4: TT through exploitation IP

Dissemination models Commercialisation of CERN IP Licensing Service and consultancy TT R&D projects (collaborative R&D) Collaboration with other institutes Partnership with industry IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Content Research context IP aspects Case studies at CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Case study: Solar collectors An ultra-high vacuum technology for an efficient solar thermal solution Technology history  1996: NEG patent filed by CERN; Inventor: C. Benvenuti  Tests of a prototype of an evacuable solar collector at CERN during 10 years  2004: Solar collector patent filed by CERN; Inventor: C. Benvenuti –Main feature: Panels can reach an operating temperature as high as 350 deg. C, even at latitudes above the 45 th parallel. –Ideal for heating and cooling, for a large majority of industrial processes and for electricity production Transfer process  2005: R&D partnership with industry for the development of a pre-industrial demonstrator  2009: First prototype production line in operation (ES)  2010: Pilot industrial installation (CH)  2011: Commercialisation (ES, BE, NL)  Slow market penetration; Customers require demonstrators to adopt the solar collector technology The expertise of the inventor has been instrumental to the success of the transfer A company from the car parts industry built the first production line 14 IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Case study: GEM Gas Electron Multipliers (GEM) is a “typical” Particle Physics technology Novel approach for tracking charged particles with high position resolution; Possibility of manufacturing large area devices  First patent filed in 1997, inventor: F. Sauli GEM has opened up a new line of R&D: Micro Pattern Gaseous detectors (MPGD) including  Detection of charged particles, neutrons and photons –GEM, ThickGEM, MicroMegas, MicroBulk –Patents from other labs (CEA, IN2P3 and CERN)  Electronics and readout systems The MPGD collaboration (RD-51,  81 institutes) addresses the R&D issues of the particle and nuclear physics community –IT, FR, GR, PT, DE, HU, BE, GB, SP, CH, US, RU, KO, JP, IN, ME, CN, IS, CA No large scale commercial exploitation is in place; GEMs are manufactured for R&D needs only 7 commercial agreements (SE, PL, DE, FR, NL, JP) 53 R&D agreements -> Strong indication of the interest of the research community Important application potential in various domains such as beam monitoring and security Ex: Spherical GEM for X-ray diffraction and material science HEPTech Network: Tangible efforts to demonstrate the applicability of the MPGD technologies outside PP First target: Security  Large area X-ray and neutron scanner for rapid air cargo screening at affordable manufacturing and operational costs  Muon tomography for the detection of illicit nuclear material 15 IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014 ©CSIRO

Lessons learned on LHC RD 51 – R&D Collaboration for Micro-Pattern Gas Detectors Context Large number of participants, Institutes and Universities Program of work defined through areas of common interest Early-stage technology Funding scheme Contractual framework Memorandum of Understanding General Conditions Applicable to Experiments performed at CERN  Consequences: Each TT case will require its own set of contractual arrangements IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC RD 51 – IP principles Simple scheme, direction set by the General Conditions High level principles, a few ground rules: Emphasis on :  Identification of needed IP, with any applicable restrictions  Access to the identified IP for the research program, and safeguarding this access Ownership of Foreground IP Any exploitation of Foreground IP left for a separate agreement Publication and acknowledgement TT Case: Scalable Readout system (CERN, IFIN-HH (RO), Uni Valencia (SP)) IP exploitation agreement  Joint ownership, CERN sole licensor of project results Licences to industry (new IP included in the licence at the same conditions)  For procuring the experiments (royalty free)  For commercial purposes  Part of the revenues to the collaboration to compensate investments IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Case study: Medipix R&D collaboration to develop and exploit a multi purpose pixel photon counting chip CERN is responsible for the designs Member institutions share the exploitation in various domains and conduct dedicated developments  FR, DE, GB, CH, NL, SE, CZ, FI, NZ, US Direct exploitation X-ray diffraction measurements for material research (NL) X-ray scanners for small animal and mammography (NZ) Gamma-ray detectors for nuclear power plants decommissioning (FR) (R&D) Readout chip for particle tracking detectors based on MPGD technologies (NL) (R&D) Readout chip for fast and position sensitive photodetection for life science (GB) Developments of derived chips Using Medipix expertise: Dosepix : Joint R&D with industry for dosimetry applications (BE, DE) Using the Medipix technology: Timepix : Joint R&D to extract timestamps & energy information from Medipix  For Particle Physics and industrial applications Application potential (Medipix, Dosepix and Timepix) Electron microscopy, gas detectors, neutron imaging, nuclear power plant decommissioning, adaptive optics, dosimetry in space and Particle Physics (LHCb Velo: Precision vertex locator) 18 IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC 19 Collaborations – Partnerships and licences of Medipix technologies Medipix2 collaboration (17 institutes) Development of an ASIC with a high spatial, high contrast resolving CMOS pixel read-out chip working in single photon counting mode. PIXcel Xray diffractometer Developed and commercialised by a Dutch company IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Medipix – R&D for hybrid silicon pixel detectors Context ~17 Members, Institutes and Universities Very specific work program Mature technology with clear commercial exploitation potential Interested industry partners at all stages Institutional financing Issues Different institutional partners around individual chip exploitation Contractual framework Collaboration Agreements with a focus on a single technology (chip) Exploitation Agreements Institutions in collaboration can claim exclusivity on the exploitation of the chip in a specific domain IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC IP principles Ownership IP relating directly to individual chips is vested in CERN Other IP vested in the party generating it Exploitation Each exploitation agreement has to be approved by the Project Monitoring Committee  1 representative per collaboration member Rules for redistribution of revenue set out in Collaboration Agreement ©CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC MEDIPIX IP organization 22 Medipix 2 Core Technology Project Readout Core Technology Project Software Chip (CERN) Medipix 3 Core Technology Project readout Core Technology Project Software Chip (CERN) Exploitation agreement Sales agreement Product agreement Exploitation agreement Sales agreement Product agreement ©CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC 23 MEDIPIX (2, 3) Participation Member Institutes Third party Institute, Industry MEDIPIX (2,3) Collaboration YesNo Core Technology Project YesNo Product Agreement Yes + CERNYes Exploitation Agreement Yes Sales Agreement (R&D institutes) Yes + CERNNo IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC 24 Case study: Crystal Clear Collaboration Crystal Clear Collaboration : Small animal PET for in-vivo drug screening From calorimetry (RD18) to PET applications Attractive market perspectives for whole body PET/CT’s: Generalized use of PET technologies across multiple domains of medical diagnostics Attractive opportunities for dedicated PET also in niche markets:  Small animal PET’s (raytest, drug discovery)raytest  Mammography, Brain devices IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

E. Auffray, CERN PH_CMX Brussels, May Clear PEM : PET for Mammography Conventional detection techniques (X-ray mammography) are very inefficient, especially in dense breasts (common in women aged under 50 years). With PEM (Positron Emission Mammography), possibility to detect small tumors (<2mm) and to be able to detect tumors in dense breasts. 1/8 woman will develop breast cancer during her life 2nd cancer related cause of death for women Positron Emission Mammogramm X-ray Mammogramm The X-Ray mammography picture reveals nothing special, whereas the tumor is clearly visible in the PEM case.

E. Auffray, CERN PH_CMX Objective: detect tumors of 1 to 2mm 26 ClearPEM-Sonic : PEMUS ClearPEM : Functional imaging Ultrasound probe Anatomic imaging Machine installed in l’hôpital nord à Marseilles Brussels, May

E. Auffray, CERN PH_CMX 27 ClearPEM plates: 2 Plates 17,3x15,5x3cm 16 SuperModules of 3072 crystals APDs in array Brussels, May B. Frisch et al., Conference record IEEE NSS/MIC2011

E. Auffray, CERN PH_CMX LYSO/BaSO 4 Matrix 6144 LYSO:Ce crystals in192 matrices Readout with APD arrays on both side for dual readout ASICs for fast readout Back APD Matrix Front APD Matrix 1 Module = 32 crystals (2x2x20mm 3 ) + 2 arrays 32APDs ClearPEM Modules 28 1 Supermodule : 12 Modules FE board Brussels, May B. Frisch et al., Conference record IEEE NSS/MIC2011

E. Auffray, CERN PH_CMX First Images MRI Axial view Sagittal view CLEARPEM 29 Full body PET Brussels, May M. Pizzichemi on behalf of ClearPEmsonic collaboration CHEF2013 conference, Paris April 2013

Lessons learned on LHC Crystal Clear Collaboration Context Existing collaboration (2001), ~15 Institutes/Universities  resulting from RD-18: Early R&D project for electromagnetic calorimetry at LHC Institutional financing, with public funding opportunities Issues Deploy the expertise developed during LHC R&D phase to benefit other sciences Maximize the transfer of knowledge to enable the construction of pre-industrial prototypes  Expertise in Material sciences (crystal), fast electronics, data acquisition  Partnership with medical experts (end-users) Develop a supporting framework that:  Minimize the legal burden when entering new projects  Allow the various TT projects to benefit from the results of the generic developments the Collaboration members  Handle possibly conflicting interests between academic and industrial stakeholders Contractual framework 3-tier structure put in place  Collaboration Agreement  Agreements for development of ‘generic’ technologies  Agreements for development of specific technologies (applied research) (industry interest) IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Crystal Clear Collaboration Activities within collaboration under confidentiality Disclosure of Generic Technology results to Collaboration for research purposes only NDA with invited external experts (industry, other institutions) Disclosure of information and publications controlled by Collaboration (incl. Patents) Industry can claim IP on results generated by Specific Research Developments (Applied research) Revenues: Sharing model established in Specific Research Developments agreement, reviewed at commercialization, industrialization or licensing stage ©CERN IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Crystal Clear Collaboration – IP principles Ownership: Ownership of Background IP not affected Ownership of Foreground IP vested in the party(ies) generating the IP Ownership of improvements to Background IP considered Foreground IP if developed within CTP or PDP, considered Background IP if developed by CCC member individually Protection: Collaboration level Strategy for protection Generic Technology development Project level (CTP) IP protection implementation and follow-up as specified in collaboration agreement Specific Development Project level (PDP) Ad-hoc, depending on specific needs of parties in the PDP. IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC Crystal Clear Collaboration - IP principles Access: Determined prior to conclusion of any agreement Access by: CCC members Industrial partners Commercial users Access for: CCC CTP (by participants to that Project or to another Project) PDP Product Industrialization Commercial Exploitation Each CCC member determines which Background IP it wishes to contribute to the Collaboration; Access to Background IP of CCC members for internal research purposes by other CCC members through membership to CCC; Access to Foreground IP of CTP for evaluation purposes through membership to CCC; Access to Foreground IP of CTP for research and development through joining that CTP, or setting up another CTP, or getting a license; Access to Foreground IP of CTP for PDP or commercial exploitation possible if party to that CTP, or by obtaining license Access to Background IP or Foreground IP of PDP only through joining that PDP or obtaining license. IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

Lessons learned on LHC CCC Core Technology Project 1 Core Technology Project 2 Core Technology Project 3 Product Development Project 2 Product Development Project 1 Commercial exploitation Commercial exploitation Commercial exploitation Product Industriali- zation Product Industriali- zation Product Development Project 3 Commercial exploitation Commercial exploitation Product Industriali- zation Collaboration Groups of partners for specific purpose Industrialization [no CCC member] Commercialization IP flow Result Industry involvement CTP PDP Ind. Commercial ex. CCC: 4-layer structure IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

18 December 2006 M. Ayass, H. Hillemanns, J.-M. Le Goff Product development without Generic Technology Project 2. Product development with IP from Generic Technology Project 3. Generic Technology Project 4. Generic Technology Project with results from other GTPs 5. Commercial exploitation of Product Development* 6. Commercial exploitation of Generic Technology Project results† 7. Product Industrialization of Product Development 8. Commercial exploitation of product industrialization ‡ 9. Prod. Ind. of Generic R&D 10. Product Industrialization of CCC IP Collaboration Groups of partners for specific purpose Industrialization Commercialization IP flow Result Industry involvement Proposed structure for the Crystal Clear Collaboration – IP flows * Product fabrication; †Technology fabrication; ‡ Final product.

Lessons learned on LHC Crystal Clear Collaboration Generic Technology Project 1 Generic Technology Project 2 Generic Technology Project 3 Product Development Project 2 Product Development Project 1 Commercial exploitation Commercial exploitation Commercial exploitation Product Industriali- zation Product Industriali- zation Product Development Project 3 Commercial exploitation Commercial exploitation Product Industriali- zation Collaboration Groups of partners for specific purpose Industrialization [no CCC member] Commercialization IP flow Result Industry involvement 2 Overview of scenarios with IP flows IAEA/INPRO Dialog Forum on International Collaborations on Innovation. IAEA, Vienna November 17-21, 2014

18 December 2006 M. Ayass, H. Hillemanns, J.-M. Le Goff 37 CCC Block Detectors Project Clear PEM- Sonic Project Commercial exploitation Commercial exploitation CTP PDP Ind. Commercial ex. Proposed CCC structure - Clear PEM Sonic and Block detectors Clear PEM Licence to Industry for commercial use of pre- existing IP of Collaboration Licence to Industry for commercial use of pre- existing IP of Collaboration LIP for results of ClearPEM project CCC members for results of ClearPET project CCC members for results of ClearPET project Partnership Agreement for the development of the ClearPEM-Sonic product Partnership Agreement for the development of the ClearPEM-Sonic product

18 December 2006 M. Ayass, H. Hillemanns, J.-M. Le Goff 38 CCC Block Detectors Project Brain PET MRI Project Brain PET Project Commercial exploitation Commercial exploitation Product Industriali- zation Commercial exploitation CTP PDP Ind. Commercial ex. Proposed CCC structure - Brain PET MRI Core Technology Project on Block Detectors by subset of CCC members Julich institutional lead for PDP with Siemens

18 December 2006 M. Ayass, H. Hillemanns, J.-M. Le Goff 39 Participation InstitutesIndustry Crystal Clear Collaboration YesNo Core Technology Project* Yes, if member of the CCC No Product development Project* Yes Product industrialization NoYes * Constraints: CCC must approve the CTP; CCC must be informed of PDP

18 December 2006 M. Ayass, H. Hillemanns, J.-M. Le Goff 40 Funding InstituteIndustryGrants Crystal Clear Collaboration Supports its own costs Excluded Supports the Collaboration’s operations Core Technology Project Supports own costs and additional costs Sponsoring (2) Covers additional costs of institutes Product Development Project Supports own costs Covers costsCovers costs (1) Product industrialization ExcludedCovers costsSupports industry (1) Additional costs for institutes, full costs for industry (2) For future access through non-exclusive license

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